A trademark is any sign that is capable of distinguishing products or services, which does not go against the provisions of articles 7 and 8 of the Law on Trademarks and other Distinctive Signs, which include a list of intrinsic reasons why a sign cannot be registered, for example lacking sufficient distinctive aptitude with respect to the product or service to which it is applied; be contrary to the law, public order or morality, or consists of the usual or current form of the product to which it is applied or its container, or in a form necessary or imposed by the nature of the product or service in question ; and also those signs whose use would affect a prior third party right, understanding a prior third party right affected, among others, for example that the sign is identical to a trademark registered or in the process of registration in the country by a third party from an earlier date , which distinguishes the same products or services or their use could cause a risk of confusion or association with that brand; or Denominations of Origin or Geographical Indications previously registered.
Before starting a process, it is advisable to consider carrying out a search for the brand to be registered, which, although not binding, allows us to know all the similar or equal brands that are registered and thus know if our trademark is available. The duration of this procedure is three business days for word trademarks and fifteen business days for design trademarks, the payment to carry out official searches before the Intellectual Property Registry must be carried out simultaneously with the order of said search.
Taking into consideration the aforementioned aspects, we can submit the application for trademark registration upon payment to the Secretariat of the Intellectual Property Registry, which will start a series of examinations that the authority will carry out at our request. The first thing will be the formal examination to confirm that the application complies with the provisions of articles 10 and 11 of the Law related to priority rights and elements related to the presentation of the application, where the Registry’s Secretariat will review and verify the moment of presentation of the application, the receipt of the documents indicated in Article 9 of Law 380, otherwise the application will not be received. The date that the Registry will put in the application is the day on which the documents were presented, except for what is established in Article 6 of this law.
Secondly, the Intellectual Property Registry issues the publication notice that must be submitted to the Official Gazette at the expense of the interested party only once in a period of 15 Business days, it must include: a) The name and address of the applicant; b) The name of the legal representative or attorney-in-fact, when applicable; c) The date of presentation of the application; d) The application number; e) The name or reproduction of the trademark whose registration is requested; f) The list of products or services that the brand will protect, and the Class or Classes according to the Nice Classification; g) The type of trademark; and h) Date of issue and effective date.
Once the request is published in the Gazette, we enter the 30 sensitive working days of the process, since it is a period during which any interested person can oppose the trademark, presenting with their opposition the grounds of fact and law on which it is based, accompanying and offering the pertinent evidence. In the event that the stipulated period cannot be met, an extension for 15 business days may be submitted prior to the specified term.
Once the term to file oppositions has expired, the Registry will examine whether the trademark falls within any of the prohibitions of Article 7 and some of the cases provided for in paragraphs a), b) d) and g) of Article 8, which we previously did reference and what constitutes the Substantive Examination.
If everything is correct and within the parameters indicated by law, the Registry will proceed to register the trademark and issue a certificate stating the ownership and validity of the requested trademark, which will be published in the Official Gazette. As can be seen, the process is relatively simple, we recommend being extremely attentive to each of its stages, applicable notifications or making personal visits to follow up, finally remember that the payment of the fees according to articles 9 paragraph 6 and 19 must be anticipated.